Jeffrey D. Morton, PhD

Partner

Contact Me

Services & Specializations

Admissions

Arizona;
British Columbia;
California;
Canadian Intellectual Property Office;
US Patent & Trademark Office

Address

12544 High Bluff Drive, Suite 400, San Diego, CA 92130

3000 El Camino Real | 5 Palo Alto Square Suite 400, Palo Alto, CA 94306

8355 East Hartford Drive, Suite 207, Scottsdale, AZ 85255

Office Tel.

858.720.6330

Overview

Jeff provides strategic intellectual property advice, including patent prosecution, and related transactional support for emerging and mature companies in a wide variety of industries, with a particular focus on life sciences and medical technologies. A PhD immunologist, he has extensive patent experience in technologies including genomics, immunology, and gene editing technologies, and advises on complex freedom-to-operate life sciences issues. Jeff also maintains an active trademark practice and provides cross-border legal advice with Canadian clients, being admitted in both the U.S. and Canada.

Jeff has been recognized by the World Intellectual Property Review as a U.S. Patent Leader and Trademark Leader and as an IAM Strategy 300 world-leading IP strategist.

“I have had the pleasure to work with Jeff Morton for years as our lawyer, as a trusted advisor, as a guiding light in my work in the start-up ecosystem. The combinations of solid guidance navigating legal waters unknown to me, and the social contract and integrity of this man leaves me with nothing but great admiration for Jeff.” — Peter Rawlek, Founder and CEO, GoGetFit Canada Ltd. and Endurance Unlimited Inc.

“Jeffrey Morton is excellent at making complex technical concepts simple and easing the decision-making process for his clients. Delivering practical and cost-effective advice, he thinks holistically about business and the law and really cares about his clients and their success.” — IAM, describing Jeff as an IAM 300 Global Leader

“Jeffrey Morton is a ‘skilful leader and fantastic strategist in the IP protection and transactions area’ and has ‘high-level expertise in managing global patent and trademark portfolios while driving commercial value.’ He is also ‘extremely responsive and a pleasure to work with.'” — IAM, describing Jeff as an IAM Strategy 300 honoree

“It has been a pleasure working with Jeff Morton. He was able to guide us seamlessly through the process of preparing and submitting multiple provisional and nonprovisional patent applications to the USPTO. His deep knowledge of and extensive experience with U.S. and international patent (and other IP) matters proved very helpful at pivotal decision points. Jeff also has a strong technical background, which has enabled him to navigate the IP-related implications of cutting-edge technology in our industry. I’d highly recommend him for anyone in need of counsel on IP matters.” — Bradley Vines, former Chief Science Officer, Wavepaths

DISCLAIMER: Testimonials or endorsements do not constitute a guarantee, warranty, or prediction regarding the outcome of your legal matter.

Best Lawyers®, Biotechnology and Life Sciences, 2023
IAM Strategy 300 Global Leaders, 2022-2023
IAM Strategy 300: World-Leading IP Strategist, ranked in Legal-Technology Transfer, 2021-2022
IAM Patent 1000, 2022
California Trademark Leader, World Intellectual Property Review, 2022
Top Attorneys, San Diego Metro magazine, 2022
Arizona Patent Leader, World Intellectual Property Review, 2021-2022
SD 500 Most Influential People in San Diego, San Diego Business Journal, 2021-2022
Leaders in Law Finalist, San Diego Business Journal, 2020-2021
Men of Influence Winner, San Diego Metro magazine, 2021

Leadership and Management Certificate, University of Pennsylvania Wharton School, 2019
JD, University of British Columbia Faculty of Law (Associate Editor, UBC Law Review), 2007
PhD (Immunology), Washington University in St. Louis School of Medicine, 2004
BSc (Biology and English), with distinction, University of Victoria Faculty of Science, 1998

Speaker. “IP Rights Are A Key Economic Asset: Is Your IP Strategy Ready & Why It Matters,” Biocom California “Let’s Talk About” event, San Diego, CA, May 9, 2023.
Panelist. “Negotiating IP Rights in Industry Sponsored Research Agreements,” Strafford webinar, March 16, 2023.
Co-presenter. “Is Your Life Sciences Patent Enabled?” webinar, March 14, 2023.
Moderator. “Patent Practice Foreign Filing and Prosecution Tips,” San Diego County Bar Association, December 15, 2022.
Author. “New USPTO Pilot Program Offers Opportunities for Cancer/Oncology Companies,” December 13, 2022.
Co-author. “Pharma-Related Patent Enablement Reaches the Highest Court,” November 10, 2022.
Co-author. “Tacking in Headwinds: Integrating AI and Machine Learning in Life Sciences,” October 21, 2022.
Co-author. “Expedited Examination Programs at the USPTO: What You Need to Know to Secure Your Patent Promptly,” August 16, 2022.
Co-author. “USPTO Introduces Climate Change Mitigation Pilot Program,” June 30, 2022.
Panelist. “Expanding the OC Role with AI Tools: Applying technology to be a strategic advisorto clients and colleagues,” World Intellectual Property Review Insights webinar, June 28, 2022.
Co-author. “What the PTAB’s CRISPR-Cas9 Decision for Broad Institute Means for Gene Editing Patent Landscape,” IP Watchdog, May 20, 2022.
“Patenting Ranges: The Importance of Effective Disclosure in Light of the Indivior Decision,” CU Innovations, University of Colorado, April 11, 2022.
Co-Author. “Pharma Patents: New Insights To Satisfy Written Description For Claimed Ranges,” Outsourced Pharma, April 11, 2022.
“International Patent Law and Start-Up Enterprises,” UC Davis School of Law, April 5, 2022.
“Russia Permits Patent Misappropriation From Unfriendly Countries,” Snell & Wilmer Global Connection Newsletter, March 15, 2022.
Guest Blogger. “The Importance of Freedom To Operate,” Hans & Company Blog, February 16, 2022.
Episode Host. “mRNA Vaccines and the Importance of Freedom To Operate (FTO),” CalCurrent Podcast, February 10, 2022.
Co-Author. “Keeping Valuable IP When a Key Employee Jumps to a Competitor,” Today’s General Counsel, January 24, 2022.
Co-Author. “Juno v. Kite Case Implications For Functionally Claimed Biological Compositions,” BioProcess Online, November 12, 2021.
Co-Author. “Collaboration Agreements: Critical Issues and Common Pitfalls,” BioProcess International, October 28, 2021.
Co-Author. “Setting a New Standard,” Intellectual Property Magazine, October 1, 2021.
Co-Author. “Presenting Working & Prophetic Examples in Patent Applications,” Co-Author, Bloomberg Law, September 8, 2021.
Episode Host. “Five Common U.S. Patent Applications,” CalCurrent Podcast, July 22, 2021.
“International IP Strategy for Startups,” SBDC @ University of California, Irvine Beall Applied Innovation Incubator, July 13, 2021.
“USPTO Update: Distinguishing Between Prophetic and Working Examples,” Snell & Wilmer Legal Alert, July 2, 2021.
Co-Author. “Home of the Free, Land of the Waive? Patent Waivers in the Time of COVID-19,” Snell & Wilmer Global Connection Newsletter, June 23, 2021.
“Trends Related to Licensing Intellectual Property out of University and Research Institutions,” Intellectual Property Law Section of the San Diego County Bar Association, June 16, 2021.
Co-Presenter. “IP Issues in the Time of COVID-19,” Snell & Wilmer Virtual CLE Series, June 15, 2021.
Episode Co-Host. “CalCurrent’s 50th Episode!” CalCurrent Podcast, June 3, 2021.
Co-Author. “Challenges of ‘Enabling’ Antibody Claims with Functional Limitations,” Bloomberg Law, April 20, 2021.
“Life Science Patent Law: International Perspectives for Start-Up Enterprises,” UC Davis School of Law, April 12, 2021.
Co-Presenter. “Transactional Legal Practice: Views from In-House and Private Practice,” Grand Canyon University’s Honors College Seminar Series, March 30, 2021.
Episode Host. “Will the Supreme Court’s Decision in Minerva Surgical v. Hologic Change U.S. Patent Law?” CalCurrent Podcast, March 18, 2021.
“Roundtable: How to Get Into Intellectual Property Practice with Any Background,” Intellectual Property Law Section of the San Diego County Bar Association, March 4, 2021.
Co-Author. “The Importance of Minerva Surgical v Hologic,” Life Sciences Intellectual Property Review, February 2, 2021.
Co-Author. “Intellectual Property Protection in the Transportation Industry,” The Transportation Lawyer: TLA Feature Articles and Case Notes, December 2020.
Episode Host. “Four Branding & Trademark Tips for Business Owners,” CalCurrent Podcast, December 23, 2020.
Episode Host. “Four Branding & Trademark Pitfalls for Business Owners,” CalCurrent Podcast, December 03, 2020.
Co-Author. “Compulsory Patent Licensing in the Time of COVID-19: Views from the United States, Canada, and Europe,” American Bar Association Landslide Magazine, November/ December 2020.
Presenter, “Nuts and Bolts of Patent Law,” Arizona State Bar Intellectual Property Section, November 19, 2020.
Episode Host. “Bayh-Dole Act Casting a Shadow Over New COVID-19 Medical Developments,” CalCurrent Podcast, November 05, 2020.
Co-Presenter. “International IP Strategies for Protecting Emerging Technologies in the Life Sciences Sector,” Licensing Executives Society (LES) 2020 Annual Meeting, October 19, 2020.
Co-Presenter. “Patent Fundamentals, Drafting & Prosecution,” USC Stevens Center for Innovation, September 16, 2020.
Episode Host. “COVID-19 Patent Lessons,” CalCurrent Podcast, September 03, 2020.
“Patent Fundamentals, Drafting & Prosecution,” University of San Diego Law School Intellectual Property Externship Course, August 31, 2020.
Episode Host. “Patenting Antibodies,” CalCurrent Podcast, August 20, 2020.
Co-Presenter. “Recent Developments in Intellectual Property Law,” Snell & Wilmer 2020 Year-End CLE Series, August 19, 2020.
Episode Host. “Non-Disclosure Agreements,” CalCurrent Podcast, July 23, 2020.
Episode Host. “Managing Patent Portfolios,” CalCurrent Podcast, July 2, 2020.
Co-Author. “USPTO Extends Certain Patent Deadlines to July 1, 2020, but Limits Trademark Deadlines to May 31, 2020,” Snell & Wilmer Legal Alert, May 28, 2020.
“U.S. Patent Office Implements COVID-19 Pilot Program for Prioritized Examination,” Snell & Wilmer Legal Alert, May 15, 2020.
Co-Author. “Patenting Across Three Jurisdictions,” Intellectual Property Magazine, April 2020.
Co-Author. “USPTO Extends Deadlines to June 1, 2020,” Snell & Wilmer Legal Alert, April 29, 2020.
Presenter and Moderator. “Managing Business Needs During a Pandemic: Intellectual Property Update,” Snell & Wilmer Live Webinar to ACC SoCal, April 8, 2020.
Co-Author. “Copyright Office Announces Temporary Changes to Certain Timing Provisions for Persons Affected by the COVID-19 Emergency,” Snell & Wilmer Legal Alert, April 3, 2020.
Co-Author. “Waiver of USPTO Deadlines Under the CARES Act,” Snell & Wilmer Legal Alert, April 1, 2020.
Co-Author. “Patent Office Updates Regarding COVID-19,” Snell & Wilmer Legal Alert, March 27, 2020.
Co-Presenter. “Negotiating IP Rights in Industry Sponsored Research Agreements: Structuring Ownership, Licensing, Assignment, Confidentiality, Publication, and Use Provisions,” Strafford Live Interactive Webinar, March 24, 2020.
Co-Author. “COVID-19 Outbreak Calls for Scrutiny of Patentability Standards for Diagnostic Tests,” Snell & Wilmer Legal Alert, March 17, 2020.
Co-Author. “INSIGHT: U.S.-China Trade Agreement IP Provisions Ambitious,” Bloomberg Law IP Law News, March 16, 2020.
Co-Author. “US-China Trade Deal: Ambitious Yet Impressive,” Managing IP, March 13, 2020.
Co-Author. “mRNA vaccines: how to navigate the freedom-to-operate maze,” IAM Media, January 12, 2022.
Co-Author. “Ringing the changes: New patent legislation is about to come into force in Canada,” Intellectual Property Magazine, October 2019.
The Phoenix CFO Leadership Council’s Law School for the CFO Program, Phoenix, AZ, October 17, 2019.
Co-Author. “Approaching Antibody Patents After Amgen V. Sanofi,” Law360, January 30, 2019.
Co-Author. “Patent And Copyright Changes In The New NAFTA,” Law360, November 8, 2018.
Co-Presenter. “Negotiating IP Rights in Industry Sponsored Research Agreements,” Co-Presenter, Strafford Webinar, October 16, 2018.
Co-Author. “What To Consider When Crafting Biotech NDAs,” Life Science Leader, October 4, 2018.
Co-Author. “Time after Time,” Intellectual Property Magazine, September 25, 2018.
Co-Author. “The Medical Device Excise Tax: Three Potential Outcomes,” Medical Device and Diagnostic Industry, September 7, 2018.
Co-Author. “Amendments to Rights of Federally Funded Inventions and Government Owned Inventions,” Snell & Wilmer Legal Alert, April 23, 2018.
“Supreme Court Decision Limits Post-Sale Restrictions by Patent Owners,” SWIPLit Blog, May 30, 2017.
Co-Author. “Improving the Prognosis for Your Diagnostic Method Patents,” Bloomberg BNA’s Patent, Trademark & Copyright Journal, March 3, 2017.
Invited Lecturer. “From the Lab to the Marketplace,” University of Arizona, Tech Launch Arizona, 2017.

Licensing Executives Society, USA and Canada
San Diego County Bar Association, Intellectual Property Section: Chair (2023), Vice Chair (2022), Member at Large (2021)
San Diego Biotechnology Network
San Diego Intellectual Property Law Association
San Diego Angel Investors
San Diego Entrepreneurs Exchange
San Diego Regulatory Affairs Network
Arizona BioIndustry Association (AZBio), Board of Directors 2022-Present
Transportation Lawyers Association
Flinn Foundation Bioscience Roadmap Steering Committee
Alliance for SoCal Innovation
American Bar Association
La Jolla Bar Association
The eForum (formerly MIT Enterprise Forum – San Diego)
La Jolla Youth Baseball, Coach and Volunteer
San Diego SCORE, Volunteer
Surfrider Foundation San Diego Chapter, Volunteer
University of Victoria Alumni Association, Southern California Branch Contact

Mehta, Rani. “The three developments exciting US patent practitioners in 2023,” Managing IP, January 6, 2023.
Mehta, Rani. “How four firms won IP business and clients,” Managing IP, November 22, 2022.
Cruz, Adrian. “Procopio Cory Snags International M&A Attorney in Silicon Valley,” Law360, November 14, 2022.
Whitlock, Jared. “Father starts lab after intellectual property issues stymie rare disease drug development,” Endpoints News, October 4, 2022.
Mehta, Rani. “Four takeaways from the Federal Circuit Section 101 reversal,” Managing IP, September 30, 2022.
Mehta, Rani. “Examiner interviews: how in-house prevent misunderstandings,” Managing IP, August 17, 2022.
Mehta, Rani. “Senators’ bill seeks to boost patent quality and examination,” Managing IP, August 3, 2022.
“Procopio adds intellectual property attorney as partner,” San Diego Daily Transcript, May 24, 2022.
“Lateral Attorney Moves,” Lateral Attorney Report, May 23, 2022.
Hu, Tiffany. “IP Hires,” Law360, May 20, 2022.
Mitchell, Rick. “Wake Up Call,” Bloomberg Law, May 19, 2022.
Mills, James. “Procopio Adds Life Sciences IP Attorney from Snell & Wilmer,” Law360, May 19, 2022.
“How Counsel Build and Buttress Collaboration With Colleagues,” Managing IP, April 25, 2022.
“2022 Forecast: Patent Eligibility, COVID-19, NFTs,” World Intellectual Property Review, January 11, 2022.
“Five Ingredients for a Stellar IP Strategy,” IAM, January 5, 2022.
“Canada’s Patent System Steps Forward to Catch Up,” BioWorld, August 4, 2021.
“Minerva: less risk for inventors, more work for the courts,” Life Sciences Intellectual Property Review, July 1, 2021.
“Supreme Court Case Pits Inventors Against Their Former Employers,” Bloomberg Law, April 19, 2021.
“What To Watch As Justices Eye Restriction on Patent Attacks,” Law360, April 16, 2021.
“Global IP Updates – Jeff Morton – Partner – The Law Offices of Snell & Wilmer – United States,” Targem Translations Inc. YouTube Interview, May 20, 2020.
“Gilead Under Gun to Mass-Produce Virus Drug or Risk Exclusivity,” Bloomberg Law, May 5, 2020.
“COVID-19 Spotlights Ruling’s Chilling Effect on Diagnostic Tests,” Bloomberg Law, March 23, 2020.
“Government May Have Ownership or Rights to Coronavirus Vaccines,” Bloomberg Law, March 20, 2020.